1 TTAB TRADEMARK YEAR IN REVIEW Moderator: Gary J. Nelson Partner Christie Parker Hale LLP www.cph.com Lorelei D. Ritchie Judge TTAB www.uspto.com David J. Franklyn Director McCarthy Institute for IP and Technology Law www.usfca.edu David W. Grace Partner & Co-Chair IP Loeb & Loeb LLP www.loeb.com January 30, 2015 Los Angeles Intellectual Property Law Association Washington in the West Luxe Sunset Boulevard Hotel
B&B Hardware, Inc. v. Hargis Industries, Inc. (USSC, decision pending) 2 What bearing does a decision by the TTAB not to register a mark due to likelihood of confusion have on a later infringement action in district court claiming a likelihood of confusion? District court - TTAB is not an Article III court so it need not give preclusive effect to the TTAB decision 8th Cir. affirmed, the 8th Cir. uses a different likelihood of confusion test from the TTAB
B&B Hardware, Inc. v. Hargis Industries, Inc. (USSC, decision pending) 3 B&B and the U.S. Solicitor argued that the TTAB and district court proceedings were the same and that the TTAB decision should preclude subsequent litigation The Justices were skeptical of that position because of various differences like the cost of the process, the speed of the proceeding, and the availability of discovery, evidence, and live testimony
B&B Hardware, Inc. v. Hargis Industries, Inc. (USSC, decision pending) 4 Hargis not only argued that the two proceedings are different and that different types of evidence are presented in each proceeding, but that the two proceedings involved different issues TTAB whether the marks themselves were confusingly similar Infringement litigation - whether the use of the marks would result in confusion The Justices resisted the argument that the proceedings involved different issues and questioned how the TTAB s evaluation of the mark as applied to particular goods is not essentially an evaluation of the use of the mark
B&B Hardware, Inc. v. Hargis Industries, Inc. (USSC, decision pending) 5 8 th Cir. TTAB decision is not to be considered Kappos v. Hyatt TTAB decision may be admitted but given de novo review along with new evidence not presented during patent prosecution B&B s position TTAB Decision precludes subsequent litigation
B&B Hardware, Inc. v. Hargis Industries, Inc. (USSC, decision pending) 6 A TTAB decision may not seal tight your outcome in infringement litigation
In re King Productions, Inc. (TTAB, NOT precedential) 7 Is the Title of a Single Creative Work Registerable as a Trademark?
In re King Productions, Inc. (TTAB, not precedential) 8 Trademark Office Policy No Courts Section 43(a) claim based upon proof of secondary meaning This TTAB panel proper ground for refusal is Section 2(e)(1) and refusal can be overcome by a showing of acquired distinctiveness under Section 2(f) The burden is significant - a title is highly descriptive of a book or DVD
In re King Productions, Inc. (TTAB, not precedential) 9 What Now on Titles?
Blackhorse v. Pro-Football, Inc. (TTAB precedential) 10 REDSKINS Cancelled Again
Blackhorse v. Pro-Football, Inc (TTAB precedential) 11 Cancellation of six registrations containing REDSKINS disparaging Native Americans DC Circuit (2009) Case barred by laches Disparagement: 1) Meaning 2) Does the meaning disparage A substantial composite of Native Americans found the term REDSKINS to be disparaging
Nationstar Mortgage LLC v. Ahmad (TTAB, precedential) 12 Fraud has been put back in the tool box
Nationstar Mortgage LLC v. Ahmad (TTAB, precedential) 13 First sustained fraud claim since the 2009 CAFC decision In re Bose In re Bose fraud is when an applicant knowingly makes a false material representation with the intent to mislead the USPTO Board found that the applicant's representations were fraudulent Applicant was not a real estate broker, insurance broker, or mortgage insurance broker, each of which required a state license, at the time of filing the application to register the mark
Trademark Office Pilot Study Data 14 In 2012, 500 registrations filing Section 8 or 71 Declarations of Use randomly selected for proof of use pilot 97% (486) of registrations completed the pilot 51% (253) of registrations unable to verify previously claimed use 35% deleted goods/services queried under the pilot 16% failed to respond to pilot Office actions and were cancelled 81% (406) of registrations received notices of acceptance (includes notices issued after goods/services queried under the pilot were deleted)
Hana Financial, Inc. v. Hana Bank 15 Example of Tacking
Hana Financial, Inc. v. Hana Bank (USSC) 16 Tacking a mark holder may make slight alterations to a mark and still maintain the rights of the original mark, including priority date. 9 th Cir. A tacking inquiry is an exceptionally limited and highly fact-sensitive matter reserved for juries, not judges. USSC affirmed the 9 th Cir. USSC response to Hana Financial s arguments Legal equivalence is a mixed question of law and fact that has typically been resolved by juries.
Hana Financial, Inc. v. Hana Bank (USSC) 17 USSC response Hana Financial s arguments (Cont.) Tacking need not be resolved by relying on precedent often courts relied on precedent only to define the legal standard Whether or not it decreases the predictability of the trademark system, the same framework is applied in tort, contract, and criminal justice cases Tacking is not an exclusive judge issue - petitioner relied on cases in which judges have resolved tacking disputes in bench trials or at summary judgment Tacking is a matter for the jury
Hana Financial, Inc. v. Hana Bank (USSC) 18 With tacking, legal equivalence for purposes of determining priority is a fact question for the jury and thus appropriate for consumer survey evidence
Hana Financial, Inc. v. Hana Bank (USSC) 19 Broader implications? A grant of tacking is based off a consistent commercial impression viewed through the eyes of a consumer Tacking is a matter for the jury because it relies upon an ordinary consumer s understanding of the commercial impression However, elements of likelihood of confusion also turn on the understanding of the ordinary consumer
Hana Financial, Inc. v. Hana Bank (USSC) 20 Broader implications? Will Hana Financial have an impact on the current circuit split on likelihood of confusion? 9 th Cir. Factual question for the jury 2 nd and 6 th Cirs. Mixed question of fact and law Fed. Cir. purely a question of law Hana Financial may not only have an impact at trial, but it may also change the standard of review on appeal
21 Bayer Consumer Care AG v. Belmora LLC (TTAB, precedential) Enforcing Extraterritorial Rights
Bayer Consumer Care AG v. Belmora LLC (TTAB, precedential) 22 Bayer does not own a registration or use the mark FLANAX in the United States FLANAX brand analgesic has been sold in Mexico since 1976 and ranks as the top-selling pain reliever in Mexico Respondent misrepresented the source of its FLANAX-brand products by copying petitioner's mark and logo
Specht v. Google Inc. (7 th Cir.) 23 ANDROID DATA was a mark for software and web design services ANDROID DATA was abandoned in 2002 Google used the ANDROID mark in 2007 for its smartphone operating system By using the abandoned mark, Google became the owner and senior user
Specht v. Google Inc. (7 th Cir.) 24 Use can resurrect the dead (Trademark)
FUJIFILM SonoSite, Inc. v. Sonoscape Co. (TTAB, precedential) 25 FUJIFILM submitted documents attached to its notice of reliance (673 pages in all) An opposer is required to indicate the relevance of each page by dupont factor The applicant is entitled to know which pages allegedly support which likelihood of confusion factor
FUJIFILM SonoSite, Inc. v. Sonoscape Co. (TTAB, precedential) 26 Even if you bury them with a mountain of confusion evidence, you must still tell them where to look
Swatch AG v. Beehive Wholesale LLC (4 th Cir.) 27 The Fourth Circuit applied the Kappos v. Hyatt rule to a district court review of a decision in an opposition proceeding by the TTAB When new evidence is submitted, the district court will review both the new evidence and the TTAB record de novo
Swatch AG v. Beehive Wholesale LLC (4 th Cir.) 28 The 4 th Circuit applied Kappos v. Hyatt to trademarks. Will the Supreme Court in B&B Hardware, Inc. v. Hargis Industries, Inc.?
Chanel, Inc. v. Makarczyk (TTAB, precedential) 29 The CHANEL mark perfume and cosmetics Jewelry Clothing Handbags Sunglasses Watches Keychains leather goods retail store services Chanel, Inc.'s opposition to registration of the mark CHANEL for real estate development and construction of commercial, residential and hotel property
Chanel, Inc. v. Makarczyk (TTAB, precedential) 30 Yes, a mark can be THAT famous
Turdin v. Trilobite, Ltd. (TTAB, precedential) 31 TRILOBITE was first filed TRILOBITE PICTURES was then filed less than a month later Restricted to New York City and Connecticut TTAB - TRILOBITE entitled to a geographically unrestricted federal registration for its mark Its correspondence, contracts, billing and interaction with clients in New York City There are enough people who live in the Connecticut area and work in New York
Turdin v. Trilobite, Ltd. (TTAB, precedential) 32 If the people you do business with commute to your region, you may have rights where they live too
33 Boi Na Braza, LLC v. Terra Sul Corp. a/k/a Churrascaria Boi Na Brasa (TTAB, precedential) BOI NA BRAZA a mark filed for concurrent use for restaurant and bar service Junior mark user Applied for nationwide except for New Jersey Senior mark user The mark should be restricted to regions where actual use occurred: Dallas, Atlanta, and Cincinnati Senior user never expanded beyond its Newark, New Jersey neighborhood Junior user offered restaurant services in three cities geographically remote from one another and from Senior user Junior user granted nationwide registration, excluding New Jersey and New York
34 Boi Na Braza, LLC v. Terra Sul Corp. a/k/a Churrascaria Boi Na Brasa (TTAB, precedential) Promptly register your marks or you might be locked into where you used it
Covidien LP v. Masimo Corp. (TTAB, precedential) 35 Covidien s application to register the color pink (Pantone PMS 806) was refused in view of Masimo s Supplemental Registration for the color red Covidien then filed a petition under Section 18 to restrict the Masimo registration to the particular shade of red actually used. Masimo claimed that restriction under Section 18 is permitted only when the description is "ambiguous or overly broad," citing Wellcome The Board found that Section 18 is a proper vehicle for restricting a registration of a color mark to a particular shade of that color
Covidien LP v. Masimo Corp. (TTAB, precedential) 36 The Board required Covidien to amend its petition to a more definite statement, in ordinary language. Fire Engine Fed
37 In re Fiat Group Marketing & Corporate Communications S.p.A. (TTAB, precedential) Trademark Class Headings Do Not Describe Everything in the Class
38 In re Fiat Group Marketing & Corporate Communications S.p.A. (TTAB, precedential) The proposed wording exceeded the scope of the original class heading recitation of services: The scope of the original recitation of services Advertising services Business management Business administration Office functions Board affirmed a refusal to register the mark FIAT 500 Retail store services and on-line retail store services featuring a wide variety of consumer goods of others
Takeaways from 2014 (1 of 3) 39 B&B Hardware, Inc. v. Hargis Industries, Inc. A TTAB decision may not seal tight your outcome in district court Blackhorse v. Pro-Football, Inc. REDSKINS cancelled again, maybe it will survive appeal In re King Productions, Inc. Whether the title of a single creative work may be registered is an unanswered question Nationstar Mortgage LLC v. Ahmad Fraud back in the tool box Hana Financial, Inc. v. Hana Bank For tacking, legal equivalence for purposes of determining priority is a jury question and thus appropriate for consumer survey evidence
Takeaways from 2014 (2 of 3) 40 FUJIFILM SonoSite, Inc. v. Sonoscape Co. Even if you bury them with a mountain of confusion evidence, you must still tell them where to look Specht v. Google Inc. Use can resurrect the dead (trademark) Swatch AG v. Beehive Wholesale LLC The 4th Circuit applied Kappos v. Hyatt to trademarks. Will the Supreme Court in B&B Hardware, Inc. v. Hargis Industries, Inc.? Bayer Consumer Care AG v. Belmora LLC Extraterritorial rights can give you standing and a basis to cancel Turdin v. Trilobite, Ltd. If the people you do business with commute to your region, you may have rights where they live too
Takeaways from 2014 (3 of 3) 41 Chanel, Inc. v. Makarczyk TTAB continues to grant dilution claims In re Fiat Group Marketing & Corporate Communications S.p.A. Class heading descriptions can cause problems Boi Na Braza, LLC v. Terra Sul Corp. a/k/a Churrascaria Boi Na Brasa Promptly register your marks or be locked into where you used it Covidien LP v. Masimo Corp. Section 18 can be used for restricting color registrations
Thank You! 42 Moderator: Gary J. Nelson Partner Christie Parker Hale LLP www.cph.com Lorelei D. Ritchie Judge TTAB www.uspto.com David J. Franklyn Director McCarthy Institute for IP and Technology Law www.usfca.edu David W. Grace Partner & Co-Chair IP Loeb & Loeb LLP www.loeb.com January 30, 2015 Los Angeles Intellectual Property Law Association Washington in the West Luxe Sunset Boulevard Hotel